Thursday, February 12, 2009

Traverse Internet Law Federal Court Report: January 2009 Trademark Infringement Lawsuits

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

FILED: 1/30/2009

This is another lawsuit over keyword trademark infringement in which a competing ad is presented when the trademark of another company is searched on Google. The more interesting aspect of this case is that the Plaintiff failed to purchase all of the variations of its domain name when it had the chance and neglected to purchase the “hyphen” version of its name. Considering the fact that the search engines consider the hyphen to be merely a space this type of domain name would likely be presented high in search results when searching for the Plaintiff’s business.

The Plaintiff is a manufacturer and distributor of push-to-connect plumbing fixtures. There appears to be a registered trademark for the “quick fitting” product line of the Plaintiff. The Defendant purchased “” and is using it on a competing website. The lawsuit also alleges that the Defendant is keying ads on Google off of Plaintiff’s trademark and uses the trademark in the title of the ad.

The lawsuit includes counts for federal trademark infringement, false designation of origin, dilution of Plaintiff’s trademark, violation of the Anti-Cybersquatting Consumer Protection Act, and unfair competition. Plaintiff requests the entry of a temporary restraining order, preliminary injunction, permanent injunction, the transfer of the domain name, an accounting of all Internet traffic statistics form the website, compensatory damages, triple damages, reasonable attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1268.

FILED: 1/29/2009

Obviously, the Defendant has contested the trademark to “defensivedriving”. When analyzing domain names and trademarks together, you discard the “.com”. Therefore, this Plaintiff claims to have a valid registered trademark in “defensivedriving”. It is not surprising that the Defendant has filed to cancel the trademark and this lawsuit is partially an attempt to obtain a court order prohibiting the U.S. Patent and Trademark offices review of the trademark. How anyone gets a trademark to such a generic and descriptive phrase is beyond me, but obviously the examiner of the original application approved the filing for registration. A trademark clearance evaluation would have identified this issue prior to the use by the Defendant of the domain names, but a company could spend a small fortune obtaining a trademark clearance legal opinion every time a phrase is used.

The Plaintiff and Defendant are competing driver safety schools and related services. Plaintiff claims to own a federally registered trademark in the term “”. Defendant is using various iterations of “defensivedriving” in its domain names.

Plaintiff has sued under the Anti-Cybersquatting Act for federal trademark infringement, false designation of origin, common law trademark infringement, unfair competition, and violation of the Texas Anti-dilution statute. The relief requested includes compensatory and punitive damages and the request for entry of a preliminary and permanent injunction prohibiting further infringement of Plaintiff’s trademarks. The Plaintiff also requests the court to enter an order directing the director of the United States Patent and Trademark Office to deny and dismiss the petition for cancellation of the trademark filed by the Defendant. Traverse Internet Law Cross-Reference Number 1269.

FILED: 1/16/2009

The interesting aspect of this case, aside from the broad use of search engine optimization techniques to flood Google search results with the Defendant’s website when the Plaintiff’s business is searched, is the use of an anchored text link with the Plaintiff’s name that does not link to the Plaintiff. This is an evolving area of law and is a nuance to your typical trademark infringement claim since clicking on the link confuses consumers into thinking that SOAProjects’ website is not operating and at the same time presents advertising for the Defendant. Not mentioned, but likely as equally important, is the effect of this type of an anchored text link on Google search results. Google will see the Defendant’s page as a relevant result when people are searching for the Plaintiff’s business.

SOAProjects, Inc. was founded in 2004 by public accounting and industry professionals and is an international consulting firm offering enterprise advisory, regulatory reporting, accounting and finance, enterprise governance, information technology consulting, and overall crisis management. The Defendant is an accounting firm founded in 2007. The lawsuit alleges that Murdock Martell has employed a deceptive form of “guerilla marketing” to drive traffic to its website by creating web pages on its website for over 25 of its competitors including the Plaintiff. By October, 2008, a forensic analyst at SOAProjects determined that searches in Google for the name “SOAProjects” yielded only the website of the Defendant. The Plaintiff alleges the use of its trademark in extensive search engine optimization techniques practiced by Murdock Martell. One of the uses complained about of the SOAProjects trademark name is an anchored link with the Plaintiff’s name that, when clicked, leads to an error message page with advertising of the Defendant on that same page.

Plaintiff has sued for unfair competition under the Lanham Act and unfair competition under California law. The prayer for relief includes a request for the entry of a permanent injunction prohibiting Murdock Martell from all use of the terms “SOAProjects” and “SOAProjects, Inc” in an unlawful, unfair, false and/or deceptive manner, compensatory damages, punitive damages, attorneys’ fees, costs and such other relief as the court determines as proper. Traverse Internet Law Cross-Reference Number 1270.

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